French saisie-contrefaçon or UPC seizure: the decision matrix
Faced with a suspected infringement, a company now has two evidentiary instruments in Europe: the French saisie-contrefaçon, granted on ex parte application, and the order to preserve evidence before the Unified Patent Court. They are not equivalent. The choice is made before the first formal step, and it is difficult to reverse.
La réponse tient en une phrase : la saisie française reste l’outil le plus large et le plus sûr lorsque la preuve doit servir ailleurs qu’en Europe, lorsque le conseil en propriété industrielle habituel du requérant doit assister aux opérations, ou lorsque la France est le territoire principal de la contrefaçon ; la mesure devant la Unified Patent Court (JUB), ou Juridiction unifiée du brevet (JUB), prevails where the evidence must feed directly into an action brought before that court. The rest of this article explains why, and what to prepare in each case.
What the French saisie still offers
The saisie-contrefaçon remains the most extensive evidentiary measure in European patent litigation. It is ordered on ex parte application, without the adversary being informed, and its surprise effect is complete. The judicial officer may describe, sample and seize, and the scope of the mission may extend to accounting documents: in practice, this is often the real purpose of the measure, far more than establishing the material facts.
Two features clearly set it apart from what the unified court offers. The first is the assistance of the applicant's usual patent attorney, who knows the patent and knows what to look for. The second is that evidence gathered in France can be produced in foreign proceedings, which makes it an entry point for global litigation.
Two constraints have changed how operations are conducted
Proportionality
Under the influence of EU law, the judge now assesses the proportionality of the measure and expects reasonable evidence of infringement. The threshold remains low, and in practice this requirement bears on the scope of the authorised measures far more than on the principle of the order. The operational consequence is clear: it is the drafting of the application, not the hearing, that determines what the applicant will actually be able to take away.
Sequestration and trade secrets
Since Law No. 2018-670 of 30 July 2018 and Decree No. 2018-1126 of 11 December 2018, the seized party has a structured mechanism for protecting its trade secrets. The items collected are placed under provisional sequestration, and Article R. 153-1, paragraph 2, of the French Commercial Code opens a one-month period running from service of the decision to request the modification or withdrawal of the order and to oppose the automatic release of the sequestration.
This point deserves clarification, because it is often misreported: the period runs from service of the decision, not from the seizure operations. The French Supreme Court has also held, on the combined basis of Articles R. 615-2 of the French Intellectual Property Code and R. 153-1 of the French Commercial Code, that provisional sequestration is not optional.
It follows that the sequestration phase, long treated as a formality, in fact decides what the claimant will produce at trial. A perfectly executed seizure whose sequestration is poorly defended is worth nothing.
What the measure before the UPC changes
The unified court has its own instruments for preserving evidence. Their advantage is obvious where the action on the merits will be brought before it: the evidence is gathered within the procedural framework that will judge it, and its admissibility is not open to debate.
But the logic differs on one decisive point. The French procedure is entirely ex parte ; before the unified court, adversarial discussion is structurally possible, and the judge may invite it. The applicant then retains the option of withdrawing its application, but the surprise effect is lost. This difference is not one of degree: it changes the nature of the tool.
A forum consideration must be added. The divisions are not equally familiar with such an intrusive procedure, and French experience in this field is long-standing. Bringing an application to preserve evidence before judges trained in this exercise is not a matter of comfort: it is a parameter of the outcome.
Choosing: the matrix
| Situation | Instrument | Decisive reason |
|---|---|---|
| The evidence must serve in proceedings outside Europe | French saisie | Reach of the evidence and safety of its use abroad |
| France is the main territory of the infringement | French saisie | Exclusive jurisdiction of the Paris Judicial Court |
| The assistance of the usual patent attorney is decisive | French saisie | Technical reading of the patent during the operations |
| The surprise effect is vital | French saisie | Procedure conducted entirely ex parte |
| The action on the merits will be brought before the UPC | Measure before the UPC | Procedural continuity and admissibility |
| The infringement is spread across several participating States | Measure before the UPC | Territorial reach of the measure |
These two routes are not mutually exclusive. A French saisie can prepare an action before the unified court, and nothing prevents combining the instruments where the geography of the infringement justifies it. What is excluded is deciding after the fact.
Preparing on both sides
If you are considering acting. Gather reasonable evidence of infringement before drafting the application. Define the scope: locations, categories of documents, IT systems, individuals. Choose the judicial officer and the expert. Set the timetable of the action on the merits, which conditions the validity of the seizure. Decide on the forum before, not after.
If you may be on the receiving end. Identifiez à l’avance ce qui, chez vous, relève du trade secrets et où cela se trouve. Désignez un interlocuteur unique pour le jour des opérations. Sachez que le délai d’un mois de l’article R. 153-1 du code de commerce est bref et qu’il ne se rattrape pas. L’impréparation du saisi est, en pratique, le premier facteur de succès du saisissant.
Key takeaways
- The French saisie remains broader than the measure before the unified court, and entirely ex parte.
- Proportionality affects the scope of the measures, not the principle of the order: everything is decided at the application stage.
- The one-month period of Article R. 153-1, paragraph 2, of the French Commercial Code runs from service of the decision, not from the operations.
- The sequestration decides what will actually be produced at trial.
- Before the unified court, adversarial discussion is possible: the surprise effect is not guaranteed.
- The choice of evidentiary forum is difficult to reverse and is made before the first formal step.
Frequently asked questions
Must infringement be proven to obtain a saisie-contrefaçon?
No. The applicant must establish its title and its standing to act, and present reasonable evidence of infringement. The proportionality requirement bears on the scope of the authorised measures, not on the grant of the order.
What happens if the action on the merits is not brought in time?
The seizure is annulled and the evidence gathered is lost. The period is calculated from the day of the operations and is not negotiable.
Can the seized party prevent the disclosure of its trade secrets?
It may request that the sequestration be maintained and that the order be modified or withdrawn, within the one-month period of Article R. 153-1, paragraph 2, of the French Commercial Code, running from service of the decision.
Does a French saisie allow a subsequent action before the UPC?
Nothing prevents it, and this articulation is prepared from the application stage. It presupposes that the forum of the action on the merits has been decided upstream.
Anticipate rather than react
The evidentiary forum, the scope of the mission and the timetable of the action on the merits form a whole: they are decided together, before the first formal step. Dhenne Avocats prepares and conducts these measures for applicants, and challenges them in defence, before the Paris Judicial Court as well as before the Unified Patent Court. Talk to us.
This article is an original and substantially updated adaptation of an analysis by Matthieu Dhenne first published on Kluwer Patent Blog.